What is a utility patent?

A utility patent, the most typical form of patent, offers the protection of the patent laws to devices and processes. 

For more information on what can be protected by a utility patent, see what is patentable subject matter.

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What is the utility requirement?

One of the requirements for obtaining a patent is that the invention must be useful - it must have some utility. While you cannot simply claim that the invention may lead to other innovations, this is not a difficult requirement to meet. For example, the invention need not work better than other methods/inventions designed to meet the same goal. Similarly, the invention does not have to have any actual commercial value.

You only need to show such utility if you are seeking a utility patent - something does not have to have utility (i.e., be useful) to be entitled to adesign patent or a plant patent.

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What is the USPTO registration exam?

In order for an individual to be eligible to practice patent law before the PTO, they must take a test administered by the PTO known as the USPTO Registration Examination, which contains 100 multiple-choice questions about the complicated and intricate procedures and regulations relating to the patent system. It is not necessary to be an attorney to take this examination. However, one must have a sufficient “hard science” background to take the examination. Typically, this requirement is met by having a bachelor of science degree in physics, engineering, chemistry or biology.  However, the requirement can also be met if the individual can show sufficient science college courses and/or life experience.

An attorney who takes and passes this examination is a patent attorney, while a non-attorney who takes and passes this examination is a patent agent.

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What is the research exemption?

The “research exemption,” also known as the “safe harbor exemption,” is something within the patent laws which state that, for a limited period of time prior to the expiration of a patent, others are allowed to conduct research and testing which might otherwise infringe the patent if the purpose of that research is to gain regulatory approval related to the manufacture, use or distribution of drugs. For example, if the patent for a drug is shortly going to expire, people can begin preparing a generic version of that drug for FDA approval so that it can be sold shortly after the patent expires.

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What is reexamination?

Reexamination is a process where the Patent and Trademark Office, upon the request of a third party, will review a patent in light of some new prior art discovered by a third party and which the PTO had not considered during its initial issuance of the patent. For example, if you were sued by someone for patent infringement, one of the things you would likely do is conduct a search of the relevant prior art for any prior patents that could help you defend your case. If you find something which you believe invalidates the patent and which was not considered by the PTO, you can request that the PTO reexamine the patent in light of this new prior art.

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What is reduction to practice?

Within the context of patent law, this refers to the physical part of the inventive process, where an idea is turned into (or “reduced”) to a practical device which can perform the idea


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What is the public domain?

The “public domain” includes all inventions, creations, etc. which are not protected by any intellectual property rights.  Such information is not owned by anybody, which means anyone is entitled to use or copy it.

So the public domain includes information that has never been protected by any intellectual property rights.  For example, the title of a book or movie is not something which can be protected by copyright, so you could write a book called “The DaVinci Code” without infringing Dan Brown’s copyright in the book, assuming that your book has nothing in common other than the title.

The public domain also includes information that was protected at one time but no longer has any such protection.  For example, when a patent expires, anyone can make or use the invention that was previously protected by that patent.  So even though Thomas Edison patented the light bulb in the 1880’s, that patent has long since expired and anyone can now make a basic light bulb.

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What is the PTO?

The PTO is the short form usually used to refer to the United States Patent and Trademark Office, an office of the U.S. Department of Commerce and the government body responsible for granting and overseeing patents (as well as trademarks). Thus, patent applications are submitted to the PTO, and when a patent is granted to an inventor, that grant is issued from the PTO.

Within the PTO are various employees known as examining attorneys, or simply examiners.  These examiners review submitted patent applications, determining whether a patent can be granted to the submitting inventor.  Often, this requires the examiner to work with the submitting inventor (or, more often than not, the submitting inventor’s attorney) to address the examiner’s concerns about the patent application and whether it meets the formal requirements for obtaining a patent. This process of obtaining a patent from the PTO is known as “patent prosecution.”

For more information about the PTO, you can go to its surprisingly useful website.

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What is a provisional patent application?

A provisional patent application is an inexpensive and simpler version of a full patent application which can be filed with the PTO as a type of place holder. This patent application contains a full disclosure of the invention, explaining what the invention is and how it works, but does not have to contain the detailed claims which indicate precisely what elements of the invention the inventor seeks patent protection for.  Because these applications are less involved than full patent applications, they are cheaper to prepare and easier to file. Also, the PTO filing fees are cheaper for a provisional patent application than for a full patent application.

A provisional patent application will not become a full patent without further actions taken by the inventor. Specifically, within 12 months of filing the provisional application, the inventor must file a non-provisional patent application, which is a full patent application. If this is done in time and the patent is ultimately granted, the patent will be considered filed as of the date when the original provisional application was filed. This is often important with regard to the issue of patent priority. If, however, the inventor allows 12 months to pass without filing a follow-up application, the original provisional application expires. Often times, an inventor will file a provisional application and then allow it to simply expire, because the inventor decides not to seek patent protection for the invention in question.

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What is prosecution history estoppel?

During the application process, a patent applicant may withdraw certain claims from the invention, essentially surrendering them to get the patent approved. In a later dispute where the patent owner claims that another product is infringing his patented product, the patent owner cannot rely upon the doctrine of equivalents if the relevant aspect of the allegedly infringing product is actually performing what was in the surrendered claim (in other words, he cannot argue that the allegedly infringing product is equivalent to his patented invention because it does what was surrendered).

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What is a product claim?

A product claim is a patent claim covering the design or structure of a product.

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What is a process claim?

A process claim is a patent claim covering the method by which an invented application is performed. A process claim identifies and explains each step that must be followed to perform the invented application, detailing the process.

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What is a process?

Within the context of patent law, a process is some method for making or doing something. For example, if you invent a way to apply some chemical to wood which ends up making the wood stronger, that process could be patented (assuming it meets the other patent requirements).

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What is priority?

Patent priority relates to the issue of who is entitled to a patent when two different inventors create the same invention and seek patents on those inventions. For example, suppose that Inventor A invents a Gadget in 1990 and files a patent application in 1992. Meanwhile, Inventor B invents the same Gadget in 1991 (after Inventor A invented his) but files his patent application that same year, in 1991 (before Inventor A filed his patent application). So Inventor A invented the Gadget first, but Inventor B filed his patent application first. The issue of who gets the patent is the issue of “patent priority.”

In the United States, the issue of patent priority is determined by the so-called “first to invent” rule. So in the above example, because Inventor Ainvented his Gadget first, he will get the patent, even though Inventor B filed his patent application first. Most foreign countries, however, use an alternative rule called the “first to file” rule. This rule focuses on the filing of the patent application, rather than on the date of invention. So in the same example under this rule, Inventor B would get the patent because he filed first, even though Inventor A invented his Gadget first.

It should be noted that Congress has recently discussed amending the United States patent laws so that the issue of patent priority is decided by the “first to file” rule used by most other nations, thereby harmonizing United States patent law with the rest of the world’s patent laws.

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What is prior art?

Within the context ofpatentlaw, “prior art” is a broad term referring to all knowledge, products, patents, information etc. which relate to the subject matter of a patent application and which was public prior to the date the patent application was filed. Relevant prior art can include information in published articles, known methods and techniques and products on the market.

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What is a plant patent?

A plant patent offers the protection of the patent laws to newly discovered plant seedlings or discoveries of asexually produced plants. For example, a plant patent can protect a special variety of tomato invented by someone.  Unlike with a utility patent, something need not be useful (that is, have utility) to qualify for a plant patent.

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What is patentable subject matter?

One of the requirements for obtaining a patent is that the invention must be something which is allowed to be patented. So when you are thinking about getting a patent, you have to think about the “subject matter” of your invention to see if it falls within one of the categories of patentable subject matter or whether it is something which cannot be patented.

You can patent a process, which is some method for making something or doing something.  More information on processes.

You can patent a machine, which is any device which serves a purpose or performs some task.

You can patent an article of manufacture, which is legalese for a broad category of things which basically includes any device or composition which is made (for example, a tire or a pencil).

Although you cannot patent naturally occurring things, you can patent man-made things. For example, while you could not patent the leaves of different plants, you could patent a pharmaceutical made out of those leaves (as well as the process of making it).

Although you generally cannot patent living things, you can patent certain live matter, such as genetically engineered animals, plants, etc., or the process of extracting a natural product.

You can patent a business method (technically, this is a type of process), which is a method of doing a specific type of business. There used to be a requirement by the PTO that a business method be related to the “technological arts” to be patented - this requirement was generally met, easily, by having the business method be carried out by a computer. However, in October 2005 this requirement was eliminated and certain new guidelines were eventually issued in its place.

You can patent computer software, including the programming method used to create that program. More information on computer software.

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What is a patent specification?

A specification is the part of a patent application which describes the invention, identifying all parts and components of the invention, how they fit together, work, etc. For example, the specification for a patent covering a pencil would include a description of how the pieces of a pencil (wood, lead, eraser, etc.) fit together as well as a description of how a pencil is used (one end of the wood is sharpened to a fine point, exposing the lead contained within so that the lead can be used to place marks on paper, etc.).

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What is patent prosecution?

Patent “prosecution” refers to the process of obtaining a patent from the government (specifically from the United States Patent and Trademark Office, which is generally referred to as the PTO). After an application is filed with the PTO, there is a generally a period of negotiations between the inventor (or, more often than not, the inventor’s patent attorney) and an employee of the PTO known as a patent examiner. As a result of these negotiations, the patent application will be granted or rejected by the examiner (and often times, for the examiner to grant the application, the inventor will have to narrow or make changes to his application). These negotiations may also lead to a “continuation application” or a “continuation- in-part application.”

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What is patent pending?

“Patent pending” simply means that someone has filed a patent application to protect some invention, but the United States Patent and Trademark Office has not yet made a determination of whether the invention meets the requirements to be entitled to a patent. By marking an invention with the phrase “patent pending,” the inventor is warning people that at some point in the future, a patent may be issued which will protect at least some aspect of the product and that copiers should be careful because they could end up infringing the inventor’s rights in the product. 

It should be noted that if someone places the phrase “patent pending” on a product when there is no related patent application filed with the PTO, they can be fined.

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